APAC Monthly IP Update – October 2020 

Asia-Pacific

China

China amends its Patent Law

On 17 October 2020, China’s National People’s Congress Standing Committee passed amendments to the patent law. This revised patent law (“2020 Patent Law”) will take effect on 1 June 2021. Since the previous law was revised in 2008 ("2008 Patent Law"), this is the first time after more than a decade that China has amended its patent law.

Before the passage and promulgation of the 2020 Patent Law, two draft amendments were published on 4 January 2019 (“First Amendments”) and on 3 July 2020 (“Second Amendments”) for public comments and consultation. Compared to the Second Amendments, the 2020 Patent Law slightly modifies certain provisions. In general, compared to the 2008 Patent Law, the 2020 Patent Law maintains the key developments from the Second Amendments including enhanced design patent protection such as the term of a design patent is extended from 10 to 15 years, the possibility of receiving compensation for unreasonable delay in the granting process of invention patents, , pharmaceutical patent-term extensions, increased statutory damages for patent infringement, an improved damage determination method, and the establishment of an early pharmaceutical patent-dispute resolution mechanism and patent linkage system that further protects the rights of patentees. 

Please click here for a Law-Now Article of the 2020 Patent Law, and click here for the full text (Chinese only) of the passed amendments.

CNIPA publishes draft revision of guidelines for patent examination for comments

On 30 September 2020, China's National Intellectual Property Administration (“CNIPA”) issued Draft Revision of the Guidelines for Patent Examination (First Batch of Draft for Comment) (“Draft Guidelines”), which will be open for public comments until 15 November 2020.

The most recent amendments to the Guidelines for Patent Examination took effect on 1 February 2020, which mainly focus on rules and regulations for examining applications including algorithms or business methods in the fields of AI, Internet Plus, big data and blockchain. In response to the rapid economic and technological development and the improvement of the quality and efficiency of patent examination, the CNIPA issued the Draft Guidelines that focus on patent examination in the pharmaceutical field. Compared with the currently effective 0201 Guidelines, highlights of the Draft Guidelines are as follows:

  • Providing examples where post-filing data is accepted

  • On the basis of amendments made in 2017, the Draft Guidelines add one provision providing two examples where supplemental data in the pharmaceutical field should be accepted and considered, especially concerning data proving the treatment effect and data showing an unexpected technical effect compared to a cited prior art.

  • Making the clarification between “disclosure” and “presumed disclosure” for compound applications

  • Previously, if a compound is mentioned in a prior art, it is considered disclosed and destroys the novelty of the compound. In the Draft Guidelines, it specifies that a compound is disclosed when the structural information such as the chemical name or molecular formula (structural formula) is disclosed. The compounds are presumed to be substantially similar when considering the incomplete structural information in combination with other information, such as the physicochemical parameters, preparation method, and data showing the effect. Under such circumstance, this presumption can be overturned if an applicant can prove otherwise.

  • Clarifying the examination criteria for obviousness of a chemical compound

  • Compared to the previous version that states a compound not structurally similar to a prior art compound is considered non-obvious if the compound provides an effect, the Draft Guidelines specifies that the analysis of the obviousness of a compound should follow the following three-step analysis: firstly, identify the closest prior art; secondly, identify the problem actually solved by the invention; and thirdly, determine the obviousness issue. The Draft Guidelines reaffirms that a compound is considered non-obvious when there is an unexpected technical effect. The Draft Guidelines also provide examples for determining obviousness.

  • Clarifying the examination criteria for biological products

Compared to the previous version stating that the encoding gene is obvious when the sequence of a protein is unknown and a skilled artisan can easily obtain the sequence of the amino acid of the protein, the Draft Guidelines specifies that the analysis of the obviousness in the biological field should also follow the three-step analysis stated above. It also provides detailed guidance for determining the obviousness of genes, polypeptides or proteins, recombinant vectors, fusion cells, and monoclonal antibodies.

Please click here for the full text (Chinese only) of the Draft Revision of the Guidelines for Patent Examination (First Batch of Draft for Comment).

CNIPA issues provisions on the protection of geographical indications

On 24 September 2020, China National Intellectual Property Administration (“CNIPA”) issued a draft of its Provisions on the Protection of Geographical Indications (Draft for Comment) (“2020 Draft”), which was open for public comments until 24 October 2020.

The 2020 Draft [is a draft of China’s dedicated legislation on geographical indications (“GI”), and is aimed at clarifying the rights and obligations of parties in relation to GI; stipulating circumstances where the protection of GI is denied; optimising the application and examination processes for protection of GI; strengthening the protection of GI; strengthening the quality supervision responsibility of geographical products; and coordinating the protection of GI of foreign applicants.

Please click here for the full text (Chinese only) of the Provisions on the Protection of Geographical Indications (Draft for Comment).

SAMR publishes measures for the protection of official marks

On 28 September 2020, the State Administration for Market Regulation (“SAMR”) issued its draft Measures for the Protection of Official Marks (Draft for Comment) (“2020 Draft”), which was open for public comments until 18 October 2020. 

The 2020 Draft Measures specifies the definition of official marks, application material, examination process, protection principles both nationally and internationally, protection procedures, scenarios where registration will be denied or invalidated, administrative punishment for using an unregistered trademark identical or similar to official marks, and how to make changes.

Please click here for the full text (Chinese only) of the Measures for the Protection of Official Marks (Draft for Comment).

Hong Kong

Implementation of Court Proceedings (Electronic Technology) Ordinance and related potential impact is fast approaching

In a much-needed step towards modernising its use of technology in court proceedings, Hong Kong has recently passed a bill which will facilitate the use of technology in court proceedings. Currently, court proceedings are excluded from the operation of the Electronic Transactions Ordinance (Cap. 553), which governs electronic and digital signatures. However, recent developments in legislation and case law demonstrate the commitment of Hong Kong’s Judiciary to fall in line with many other common law jurisdictions. The proposed legislation provides for the use of electronic technology in court proceedings as an alternative to traditional paper-based proceedings.

The Court Proceedings (Electronic Technology) Bill (“Bill”), which was passed on 17 July 2020, will facilitate the filing and sending of court-related documents through electronic means and enable the use of electronic signatures for court-related documents that require signing or certification. In particular, pursuant to section 22 of the Bill, printouts of electronic documents issued or sent by courts have the same legal effect as the original document or copy. Subject to the enactment of the Bill and further subsidiary legislation, an integrated court case management system (iCMS) will first be implemented at the District Court and part of the Magistrates’ Courts.

Information is not yet available on when the Bill will come into force, but it is possible to be within this year. Making use of technology and going paperless reduces both the time and costs involved in court proceedings. These are considered a welcome and much needed development particularly in light of the challenges posed on hard-copy filing during the current COVID-19 pandemic. 

For the copy of the draft Bill, please refer to here.

South Korea

The Korean Intellectual Property Office announces the projected partial revision of the Collection Regulation on patent fees

On 28 October 2020, the Korean Intellectual Property Office (“KIPO”) announced a partial amendment to the Collection Regulations of patent fees, which supports and promotes the creation of patents by small and medium-sized enterprises.

The main points of the proposed partial amendment include:

  • The amendment calls for reducing the fees involved in applications for patents based on joint-research results by small and medium-sized enterprises.

  • The scope of benefits under the current system in which applicants can receive a 50% reduction in application fees and examination fees by applying for a patent based on joint research with small and medium-sized enterprises is expanded to include companies and research institutes, and the reduced fees apply to registration fees.

  • If an electronic application is made with a temporary statement prepared by commercial software such as PDF and HWP, the application fee will be adjusted to the same level as the regular electronic application using the software of the KIPO.

  • Additional fees for omission of drawings and specifications (and their corrections) are imposed at the same level as overseas patent offices to supplement deficiency in fees applied to international surveys and international preliminary reviews under the PCT system.

  • The amendment provides grounds for immediate implementation of the patent fee reduction policy in case of an emergency or disaster as prescribed by the Director of the Patent Office.

For the copy of the proposed draft amendment, please refer to here.

Singapore

Public consultation on Copyright (Excluded Works) Order in Singapore

From 7 September to 2 October 2020, the Ministry of Law (“MinLaw”) and the Intellectual Property Office of Singapore (“IPOS”) conducted a public consultation seeking feedback on exceptions to be included in the Copyright (Excluded Works) Order (“EWO"), including whether the current exceptions under EWO 2017 remain relevant and should be retained in the EWO.

The exceptions relate to instances where users should be permitted to circumvent technological protection measures (“TPMs”) for legitimate use of copyrighted works. TPMs are technologies and devices comparable to digital locks that restrict the access or use of copyrighted works.

Presently, the Copyright Act (“CA”) prohibits users from circumventing TPMs or from selling products and services to enable others to do so. However, this gives rise to instances where TPMs may unintentionally restrict legitimate and non-infringing acts (e.g. a TPM preventing users from copying text may also prevent the use of assistive technologies by users with printing disabilities).

Therefore, there are exceptions in the CA to allow circumventions of TPMs in specific situations. Some of the exceptions are temporary in nature that only apply to works, other subject-matter or performances (or classes) specified in the EWO.

Since the current EWO 2017 expires on 31 December 2020, MinLaw and IPOS are seeking feedback on exceptions to be included in the next EWO in order to determine whether current exceptions under EWO 2017 should be retained, expanded, or limited for the next EWO. These exceptions allow the following uses of copyrighted works:

  1. Continued use of software reliant on obsolete systems;

  2. Read-aloud and assistive functionality for digital e-books;

  3. Use of short clips from films or shows for educational purposes; 

  4. Use of short clips from films or shows for criticism or commentary; 

  5. Investigating and fixing cybersecurity flaws; and

  6. Replacement or repair of essential or emergency system software. 

The MinLaw press release can be found here and the IPOS press release can be found hereThe full consultation paper on the Copyright (Excluded Works) Order can be found here.